USPTO Patents Application 10597633

United States Patent and Trademark Ofhce

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria. Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

10/597,633

07/06/2007

Omer Einav

414/05375

4237

67801 7590 08/10/2011

MARTIN D. MOYNIHAN d/b/a PRTSI, INC.

P.O. BOX 16446
ARLINGTON, VA 22215

EXAMINER

THANH, QUANGO

PAPER NUMBER

3771

MAIL DATE

08/10/2011

DELIVERY MODE

PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

Kyi 1 li^C nx^ltxjl t ^UHiliiat y

Application No.

10/597,633

Applicant(s)

EINAV ET AL.

Examiner
QUANG D. THANH

Art Unit

3771

~ The MAILING DATE of this communication appears on the cover sheet with the correspondence address ~
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE i MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be avaiiabie under tine provisions of 37 GFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from tfie mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 GFR 1 .704(b).

Status

1 )□ Responsive to communication(s) filed on .

2a)n Tills action is FINAL. 2b)n Tiiis action is non-final.

3) n Since tiiis application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-67 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) n Claim(s) is/are allowed.

6) n Claim(s) is/are rejected.

/)□ Claim(s) is/are objected to.

8) ^ Claim(s) 1-67 are subject to restriction and/or election requirement.

Application Papers

9) n The specification is objected to by the Examiner.

lOjD The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1 .121 (d).

1 1) 0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

1 2) 0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 1 9(a)-(d) or (f).
a)nAII b)n Some * 0)0 None of:

1 .□ Certified copies of the priority documents have been received.

2. n Certified copies of the priority documents have been received in Application No. .

3. n Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) n Notice of References Cited (PTO-892)

2) n Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) Q Information Disclosure Statement(s) (PTO/SB/08)

Paper No(s)/Mail Date .

4) n Interview Summary (PTO-413)

Paper No(s)/Mail Date. .

5) O Notice of Informal Patent Application

6) □ Other: .

U.S. Patent and Trademark Office

PTOL-326 (Rev. 08-06)

Office Action Summary

Pari of Paper No./Mail Date 2011 0809

Application/Control Number: 10/597,633
Art Unit: 3771

Page 2

DETAILED ACTION

Election/Restrictions

1 . Restriction is required under 35 U.S.C. 121 and 372. Tiiis application contains
the following inventions or groups of inventions which are not so linked as to form a
single general inventive concept under PCT Rule 13.1.

In accordance with 37 CFR 1 .499, applicant is required, in reply to this action, to
elect a single invention to which the claims must be restricted.

Group I, claim(s) 1-14, drawn to a method of rehabilitation of a patient's limb
motion by exercising with two actuators using a same movement mechanism design.

Group II, claim(s) 15-19, drawn to a method of rehabilitation of a patient's first
and second organs using one actuator.

Group III, claim(s) 20-22 drawn to a rehabilitation kit with a tip and a plurality of
attaching means.

Group IV, claim(s) 23-26, drawn to a rehabilitation device with a motorized
actuator and a programmed controller.

Group V, claim(s) 27-32, drawn to a method of rehabilitation of a patient's daily
activities at home setting.

Group VI, claim{s) 33-41, drawn to a method of rehabilitation of two patients with
passing information between two rehab devices.

Group VII, claim{s) 42, drawn to a rehabilitation system of two rehab devices with
wireless data link.

Application/Control Number: 10/597,633 Page 3

Art Unit: 3771

Group VIII, claim(s) 43-50, drawn to a method of rehabilitation of a patient's limb
motion with two actuators and engaging the actuators by a patient and a non-therapist.
Group IX, claim(s) 51-65, drawn to a rehabilitation system of two rehab devices

in at least 3 degrees of freedom at different places of rehab with different operational
settings.

Group X, claim(s) 66-67, drawn to a rehabilitation system of two rehab devices in
at least 2 degrees of freedom at different places of rehab.

The groups of inventions listed above do not relate to a single general inventive
concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or
corresponding special technical features for the following reasons: The special technical
feature of group I, using a same movement mechanism design, is not shared in groups
II- X. The special technical feature of group II, exercising two organs using the same
actuator, is not shared by groups I and lll-X. The special technical feature of group III, a
tip and a plurality of attaching means, is not shared by groups l-ll and IV-X. The special
technical feature of group IV, a programmed controller, is not shared by groups l-ll I and
V-X. The special technical feature of group V, exercising a patient's daily activities at
home setting, is not shared by groups l-IV and Vl-X. The special technical feature of
group VI, passing information of two patients between two rehab devices, is not shared
by groups l-V and Vll-X. The special technical feature of group VII, a wireless link, is not
shared by groups l-VI and Vlll-X. The special technical feature of group VIII, engaging
the actuators by a patient and a non-therapist, is not shared by groups l-VII and X. The
special technical feature of group IX, at least 3 degrees of freedom at different places of

Application/Control Number: 1 0/597,633 Page 4

Art Unit: 3771

rehab with different operational settings, is not shared by groups l-VIII and X. The
special technical feature of group X, at least 2 degrees of freedom at different places of
rehab, is not shared by groups l-IX. Therefore, the respective groups lack the same or

corresponding special technical features and do not relate to a single general inventive
concept.

Lack of unity of invention may be directly evident "a priori," that is, before
considering the claims in relation to any prior art, or may only become apparent "a
posteriori," that is, after taking the prior art into consideration. For example, independent
claims to A +X, A + Y, X + Y can be said to lack unity a priori as there is no subject
matter common to all claims. In the case of independent claims to A + X and A + Y,
unity of invention is present a priori as A is common to both claims. However, if it can be
established that A is known, there is lack of unity a posterion, since A (be it a single
feature or a group of features) is not a technical feature that defines a contribution over
the prior art.

2. Applicant is advised that the reply to this requirement to be complete must
include (i) an election of a species or invention to be examined even though the
requirement may be traversed (37 CFR 1 .143) and (ii) identification of the claims
encompassing the elected invention.

3. The election of an invention or species may be made with or without traverse. To
preserve a right to petition, the election must be made with traverse. If the reply does
not distinctly and specifically point out supposed errors in the restriction requirement,
the election shall be treated as an election without traverse. Traversal must be

Application/Control Number: 10/597,633 Page 5

Art Unit: 3771

presented at the time of election in order to be considered timely. Failure to timely
traverse the requirement will result in the loss of right to petition under 37 CFR 1 .144. If
claims are added after the election, applicant must indicate which of these claims are
readable on the elected invention or species.

4. Should applicant traverse on the ground that the inventions have unity of
invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof.
Applicant may submit evidence or identify such evidence now of record showing the
inventions to be obvious variants or clearly admit on the record that this is the case.
Where such evidence or admission is provided by applicant, if the examiner finds one of
the inventions unpatentable over the phor art, the evidence or admission may be used
in a rejection under 35 U.S.C. 103(a) of the other invention.

5. Applicant is reminded that upon the cancellation of claims to a non-elected
invention, the inventorship must be amended in compliance with 37 CFR 1 .48(b) if one
or more of the currently named inventors is no longer an inventor of at least one claim
remaining in the application. Any amendment of inventorship must be accompanied by
a request under 37 CFR 1 .48(b) and by the fee required under 37 CFR 1 .1 7(1).

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to QUANG D. THANH whose telephone number is
(571)272-4982. The examiner can normally be reached on Monday-Friday.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Justine Yu can be reached on (571) 272-4835. The fax phone number for
the organization where this application or proceeding is assigned is 571 -273-8300.

Application/Control Number: 10/597,633 Page 6

Art Unit: 3771

Information regarding tine status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

/QUANG D THANH/

Primary Examiner, Art Unit 3771